This section covers examination guidelines for determining obviousness under 35 U.S.C. 103. The use of common sense does not require a “specific hint or suggestion in a particular reference,” only a reasoned explanation that avoids conclusory generalizations.

The KSR decision is discussed in detail. The Supreme Court in KSR reaffirmed the familiar framework for determining obviousness as set forth in Graham v. John Deere Co., but stated that the Federal Circuit had erred by applying the teaching-suggestion-motivation (TSM) test in an overly rigid and formalistic way. In KSR, the Supreme Court particularly emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art,” and discussed circumstances in which a patent might be determined to be obvious.

The basic factual inquiries of Graham v. John Deere Co. are also discussed. The Graham factors, including secondary considerations when present, are the controlling inquiries in any obviousness analysis. The factual inquiries enunciated by the Court are as follows:

• Determining the scope and content of the prior art; and
• Ascertaining the differences between the claimed invention and the prior art; and
• Resolving the level of ordinary skill in the pertinent art.

This section also covers rationales to support rejections under 35 U.S.C. 103, the applicant's reply, and consideration of applicant's rebuttal evidence.

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The legal concept of prima facie obviousness is a procedural tool of examination which applies broadly to all arts. It allocates who has the burden of going forward with production of evidence in each step of the examination process. This section provides further details on the legal concept of prima facie obviousness.

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This section provides examples of basic requirements of a prima facie case of obviousness including exemplary rationales.

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This section discusses supporting a rejection under 35 U.S.C. 103. Office personnel may invoke legal precedent as a source of supporting rationale when warranted and appropriately supported.

Rationale may be in a reference, or reasoned from common knowledge in the art, scientific principles, art-recognized equivalents, or legal precedent. The expectation of some advantage is the strongest rationale for combining references.

Legal precedent can provide the rationale supporting obviousness only if the facts in the case are sufficiently similar to those in the application. In addition, a rationale different from the applicant's is permissible.

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This section discusses consideration of applicant's rebuttal arguments. Rebuttal evidence and arguments can be presented in the specification, by counsel, or by way of an affidavit or declaration under 37 CFR 1.132. The types of evidence that may be used is covered in detail. An argument does not replace evidence where evidence is necessary.

This section also covers making certain types of arguments including arguing against references individually, arguing that prior art devices are not physically combinable, and many more argument types.

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This section focuses on pre-AIA 35 U.S.C. 103(c). Effective November 29, 1999, subject matter which was prior art under former 35 U.S.C. 103 via pre-AIA 35 U.S.C. 102(e) was disqualified as prior art against the claimed invention if that subject matter and the claimed invention “were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.”

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This section provides further information on AIA 35 U.S.C. 103. AIA 35 U.S.C. 103 continues to set forth the nonobviousness requirement for patentability. The most significant difference between the AIA 35 U.S.C. 103 and pre-AIA 35 U.S.C. 103(a) is that AIA 35 U.S.C. 103 determines obviousness as of the effective filing date of the claimed invention, rather than as of the time that the claimed invention was made.

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